After the Federal Circuit’s 2006 en banc decision in DSU Medical, charges of inducing patent infringement were thought to require that the accused infringer have actual knowledge of the asserted patent. In its recent decision in SEB v. Montgomery Ward, the Federal Circuit rejected that conventional wisdom and instead held that “deliberate indifference” to the existence of a patent would be sufficient to support an inducement finding. Thus, “a claim for inducement is viable even where the patentee has not produced direct evidence that the accused infringer actually knew of the patent-in-suit.”

An interesting aspect of the recent SEB decision is the court’s use of non-patent and non-Federal Circuit cases to aid its interpretation of the law. Specifically, the decision relies on three cases that are decidedly non-patent: Farmer v. Brennan, 511 U.S. 825 (1994); United States v. Carani, 492 F.3d 867, 873 (7th Cir. 2007); and Woodman v. WWOR-TV, Inc., 411 F.3d 69 (2d Cir. 2005).

Farmer v. Brennan involved the question of whether an incarcerated pre-operative transsexual who projects female characteristics could be held in a men-only prison. The Supreme Court there held that a prison official could be liable for “deliberate indifference” to inmate safety. US v. Carani involved an appeal of a child pornography conviction and the Seventh Circuit ruled that the defendant’s knowledge of the child-status of the pornography was satisfied by the defendant’s deliberate avoidance of or indifference to the truth. Woodman v. WWOR-TV involved an age discrimination charge against FOX and noted that knowledge of a fact may be proven through evidence that the party “consciously avoided knowledge of what would otherwise have been obvious him.”

Interestingly, the cases cited above are not found in the appellate briefs. Rather, the SEB court’s concept of “deliberate indifference” was raised sua sponte by the Federal Circuit.

A Broader Jurisprudential Outlook: In the past, I have spoken with appellate attorneys who suggested that briefs to the Federal Circuit should almost exclusively cite to prior Federal Circuit patent cases. I wonder if this decision is indicative of a shift in the court’s jurisprudence. In recent cases such as eBay, MedImmune, and Grokster, the Supreme Court pushed the Federal Circuit to consider non-patent jurisprudence when deciding patent cases. In KSR, the Supreme Court also suggested that the Federal Circuit should not overly bind itself to doctrine. These bits of Supreme Court guidance suggest a broader jurisprudential outlook. Additionally, soon-to-be Chief Judge Rader has a penchant for drawing connections across doctrinal lines. It will be interesting see whether this case is a sign of a new era or perhaps simply an aberration.

“It’s a garden variety case of inherency. Not really that instructive. Unless you’re an examiner who likes to throw the word “inherent” into your OA’s without any understanding of the principle whatsoever. So I guess it’s instructive for about 99.999999999999999999999999% of the examining corps. But not to me.”

In a way JD you’re right, you have no technical understanding of much of anything and you wouldn’t understand what was inherent in a reference if the inherent subject matter bit you on the arse. Nor would you have back in your days of examining toilet paper holders.

You’re wrong in that it isn’t instructive as to this situation since it was an inherency case involving a method claim being anticipated by an apparatus reference. That happens to be the topic of conversation as I recall.

“What is this difference? If person A invents a method and asks person B, “Can you modify that machine of yours to do these steps?” and person B says, “Yes” and then proceeds to modify the machine, then person A invented a method and person B invented a machine.”

I am not speaking to that situation, that situation is probably legit. Obviously in your situation the machine was supposedly created after the method was supposedly invented. Unlikely in a manufacturing scenario, but I’m sure it does happen.

Plainly I’m speaking to the situation where person A “inventlols” a method involving some specific manufacturing details in some limitations after having read in a technical specification or manual from person B specifically teaching the use of such manufacturing details with the machine person B sold person A. Perhaps those details were not laid out to be used in the specific method the applicant “inventloled” but that’s what we have 103 to guard against when it was indeed nothing but an obvious combination of old process + new machine abilities, especially where there was an explicit motivation as to why using the new machine abilities was a good thing also somewhere recited in the prior art.

“Is that magic? Or maybe just incredible coincidence?”

Um, no, it’s called a “teaching” or “suggestion” in the prior art. They usually don’t involve magic. And it certainly isn’t usually a coincidence considering the applicant themselves was likely using a machine, or the manaul/tech specs to, such as the one in question as a starting point on which to come up with his “inventionlol”.

As to the rest of your obnoxiousness I’ll just say: go get eaten by another suit k?

Since at least as early as Blonder Tongue in the early 1970s, almost every time the S Ct granted cert and rev’d a patent law judgment, it has been because the patent law precedent under review was out of step with the rest of the law. This was particularly so after about 1990. For example, consider Zurko, a perfect example of the CAFC being out of step with the other CAs. The doctrine that a licensee lacked standing to challenge validity by way of a DJ action, because there was said to be no actual case or controversy, is another. The present CAFC is just getting into step with the other circuits, as it should.

Great answer. I wonder what a judge would say if you gave that answer to one of his questions.

“In any event, you misconstrued what I was saying originally.”

No I didn’t. You’re doing your usual squirming.

“None for infringment, but lots of difference is made when you have a machine that was specifically designed by someone other than the patent applicant to perform the method, or a part of the method, that they now seek to patent.”

What is this difference? If person A invents a method and asks person B, “Can you modify that machine of yours to do these steps?” and person B says, “Yes” and then proceeds to modify the machine, then person A invented a method and person B invented a machine.

“If you were involved in my art that would be apparent on its face.”

LOL

Again, great answer. It would be a dream to prosecute a case on your docket. I wouldn’t stop laughing for a month after reading your OA.

“Absolutely. However, that does not speak to what significance the technical abilities of a new piece of machinery would enable one of ordinary skill to do and likewise what it would suggest to one of ordinary skill to do.”

So of all of the “technical abilities” a “new piece of machinery” would “enable” or “suggest” to one of ordinary skill, let me guess, this new piece of machinery is going to “enable” or “suggest” exactly the method the applicant is claiming.

Is that magic? Or maybe just incredible coincidence?

Sounds to me like hindsight.

“However, In re King might be instructive on that issue, I’d have to look again.”

It’s a garden variety case of inherency. Not really that instructive. Unless you’re an examiner who likes to throw the word “inherent” into your OA’s without any understanding of the principle whatsoever. So I guess it’s instructive for about 99.999999999999999999999999% of the examining corps. But not to me.

” And I’ll still refrain from comment until I see such a factual situation presented and can review the evidence on a case by case basis.”

Somehow I doubt that.

“Furthermore, there might even be an enablement issue in so far as the tech specs/manual might suggest that at the date of application the invention was not enabled.”

I’ll make a deal with you. You post a serial number of an application in which you made a non-enablement rejection, and I’ll post one of the OA’s that I received that concludes, with ZERO analysis whatsoever, that the method claims are obvious or inherent from the apparatus. Better yet, I’ll post a serial number of an application where the examiner “concluded” that the method claims were “inherently obvious” from the reference. (You’ll get a kick out of my response.)

Deal?

“Are you?”

No. But does it matter?

“Regardless, you should feel free to ignore the best mode requirement. I don’t really care.”

Thanks for the practice advice. I’m gonna put that with all of the other practice advice I receive from examiners.

“By ‘it’ do you “anything that isn’t expressly claimed’? It’s not clear what you’re raving about.”

By “it” I meant the machine. If the applicant for a method didn’t invent the machine, why disclose it? I’m sure your argument will be, “For enablement.” But you’d be wrong. Again.

“Showed up a couple months ago, as I recall. At least, that was the first time I remember seeing the obnoxious pseud.”

I thought I was a sockpuppet?

Oh, and let’s not forget how original your pseud is. How long did it take you to come up with that one?

“How do you “know” this? Better yet, how do you “darn tootin'” know this?”

If you were involved in my art you would know.

“If the applicant didn’t invent it, why would they put it in their application?”

Hah, good question, I wonder why they put all the nonsense that they didn’t invent in now?

In any event, you misconstrued what I was saying originally. I wasn’t saying they should put it in their app, I was saying they should provide any info, like tech specs/manuals to the machines which they own and plan to use the method “invention” with.

“If their claims are to a method, what difference does it make what machine is used to perform the method? ”

None for infringment, but lots of difference is made when you have a machine that was specifically designed by someone other than the patent applicant to perform the method, or a part of the method, that they now seek to patent.

“If they’re claiming the method, and not the machine, what good would tech specs/manuals of the machine do you?”

If you were involved in my art that would be apparent on its face.

“What are you going to do with “proof of on-sale date” or the “date of purchase by the patentee” (presumably you mean applicant)? You can’t reject their method claim based on the date the machine they use to practice the method went on sale, or the date they purchased the machine they use to practice their method.”

Orly? Who says? 103? I’m sorry, I don’t think 103 does say that. Further, it would be child’s play to reject many a claim under 103 based upon sufficient information in the tech specs of new machines which enable that new method. Absolute child’s play.

As to what I’m going to do with on sale date I would use it to establish a 102b date for the “reference”. Probably for a rejection under 103.

“Aren’t you the one on this site always bellowing that you can’t distinguish a method claim with apparatus limitations?”

Absolutely. However, that does not speak to what significance the technical abilities of a new piece of machinery would enable one of ordinary skill to do and likewise what it would suggest to one of ordinary skill to do.

Furthermore, there might even be an enablement issue in so far as the tech specs/manual might suggest that at the date of application the invention was not enabled.

You bring up a great point about the whole “you can’t distinguish a method claim with an apparatus limitation” issue though, and in fact you seem to strike pay dirt on one of my more pressing issues. That too many “follow on” “inventions” are being patented when indeed the only thing that was truly invented was, for instance, a new machine that enabled the obvious improvements for old methods. This being the case where the apparatus is in the prior art compared to the FD of the pending “follow on” application, often where the application is by “another” compared to the inventor of the actual invention, a machine that enabled the whole line of “inventionlol”. Although you’re probably too new to the board to remember when I was harpin on that subject so long ago.

“Oh, let me guess, you’re one of those examiners who, every single time without fail, concludes that “Applicant’s method claims are inherent or obvious from the apparatus of the reference.” (Sheesh, if I had a nickel for every time I’ve read that in an OA…)”

I’ve never heard that or stated such, in fact I’d like to see such a rejection if you’d be so kind as to post a serial.

“So an applicant can’t distinguish a method by the apparatus that performs the method, but the examiner can dispense with method claims by concluding that the method is “inherent” or “obvious” from the apparatus?”

More likely obvious, I’m not sure about inherent. However, In re King might be instructive on that issue, I’d have to look again. I’ve never had the “method claim is inherent in the apparatus in the reference” situation arise before me and I would hesitate to comment on that outright as it may be highly dependent on the facts of the situation.

“Do I understand your position correctly?”

I doubt it, you seem to have a hard time comprehending written language and also seem to infer too much.

Edit: Indeed after further investigation In re King as sort of on point in this discussion:

However, that doesn’t really get to the heart of the hypothetical situation you present. And I’ll still refrain from comment until I see such a factual situation presented and can review the evidence on a case by case basis.

“You know darn tootin’ that many a limitation comes directly from what the new machine…now allows for,”

How do you “know” this? Better yet, how do you “darn tootin'” know this?

“which the applicant did not invent and is not even in the application in many cases”

If the applicant didn’t invent it, why would they put it in their application?

If their claims are to a method, what difference does it make what machine is used to perform the method? Are they claiming the machine? If they’re claiming the method, and not the machine, what good would tech specs/manuals of the machine do you? What are you going to do with “proof of on-sale date” or the “date of purchase by the patentee” (presumably you mean applicant)? You can’t reject their method claim based on the date the machine they use to practice the method went on sale, or the date they purchased the machine they use to practice their method.

Aren’t you the one on this site always bellowing that you can’t distinguish a method claim with apparatus limitations?

Oh, let me guess, you’re one of those examiners who, every single time without fail, concludes that “Applicant’s method claims are inherent or obvious from the apparatus of the reference.” (Sheesh, if I had a nickel for every time I’ve read that in an OA…)

So an applicant can’t distinguish a method by the apparatus that performs the method, but the examiner can dispense with method claims by concluding that the method is “inherent” or “obvious” from the apparatus?

Yes IANAE, if only I could get the tech specs/manuals for the machines that are being used to perform some methods in my cases. You know darn tootin’ that many a limitation comes directly from what the new machine, which the applicant did not invent and is not even in the application in many cases, now allows for.

Aukermman was appropriate for an en banc ruling for at least 2 reasons: (1) clarifying confusing and inconsistent case law on laches and estoppel; and (2) overruling prior Federal Circuit panel decisions (at least 7) that suggested the defendant didn’t have the ultimate burden of persuasion on laches as an affirmative defense. The en banc opinion was also authored by the then Chief Judge Nies, which appears to be typical of en banc rulings by the Federal Circuit (see, e.g., Bilski).

Of course, the Circuit can always take a case en banc sua sponte if they really want to change the law. They can also refuse rehearing en banc if they don’t mind that a panel changed the law.

Since panels are bound by panel precedent anyway, sitting en banc is mostly just a way for the Federal Circuit to either (1) give somebody a second hearing in the same case, or (2) show that they think the case is really really important.

I don’t believe that it’s a new development for the Federal Circuit to cite outside its own jurisprudence. They seem to do so from time to time. One early example is Aukerman v. Chaides, 22 U.S.P.Q.2d 1321 (Fed. Cir. 1992, en banc), the laches and equitable estoppel decision, where the Federal Circuit cited to a variety of different non-Federal Circuit cases.

The Auckerman decision also created a stir since it cited to a Federal Circuit case in the non-patent field: it cited to one of its recent en banc decisions (Cornetta v. United States) from the field of military pay.

Of course, Auckerman was an en banc decision, which supports the point being made by Andrew Dhuey in his post of Feb 11, 2010 at 06:58 PM.

I’m not sure I follow you here regarding the differences in this scenario. But I do agree that failing to uphold your promise in an oath/dec (to submit prior art) is different from an intent to deceive. Thus the current test for inequitable conduct does not appear to apply to this situation. I find it strange that you need to make this promise in an oath/dec to get your application accepted by the PTO, but there is no downside (that I’m aware of) in not upholding your promise.

Allowing deliberate indifference to equal intent in this SEB case appears to open the door to allowing deliberate indifference to equal intent in inequitable conduct. I’d guess there is some deposition testimony out there somewhere of some well coached inventor that would fit nicely to show some deliberate indifference for an inequitable conduct argument.

In my view, to insist that “deliberate indifference” is actual knowledge disregards the plain meanings of those terms. It’s like, Oh My God, someone could literally jump down your throat! If we go there, we lose the means to communicate, word by word. Pure “deliberate indifference” cannot, within the confines of our English language, be said to be any more than constructive knowledge, or something less than actual knowledge that satisfies the legal test. I still say that this case, if not overturned en banc, will be explained by other panels as having applied an inference of actual knowledge, albeit a tenuous one here.

Exergen v. Wal-Mart, where securities fraud causes under the PSLRA are cited for support, is another recent example of this trend (a questionable approach, considering scienter must be pled with particularity under the PSLRA).

I’m thinking about a situation where an inventor doesn’t even think about submitting a reference, not out of any bad intent, but simply dismisses his/her obligations. Sign the oath and forget about the application – let your attorney’s handle it. I am unaware of any case that provides some downside for this action (even though the inventor would have broken his/her promise in the oath/dec).

Here’s what looks to me to be the standard inequitable conduct test these days, which analyzes to the intent to deceive. Fed. Cir. in Astrazeneca Pharm (2009):

“Regarding a charge of inequitable conduct, both materiality and deceptive intent must be established by clear and convincing evidence. Both materiality and deceptive intent must be shown. Intent to deceive cannot be inferred from a high degree of materiality alone, but must be separately proved to establish unenforceability due to inequitable conduct.”

A “deliberate indifference” test in inequitable conduct would appear to be outside this test.

a CAFC panel is not free to disregard applicable Federal Circuit precedential decisions.

Well, not “free” exactly, but what if they do? You appeal to more Federal Circuit judges?

What I had in mind was a situation where foreign-circuit decisions further develop the law. Like extending actual knowledge to include deliberate indifference, which was already well established in other contexts.

Or take eBay, for example. Suppose the Circuit was about to order the injunction, and suddenly one of the judges realized other circuits have an actual test for when it’s appropriate to do that.

Should the Federal Circuit use the same law as everybody else in those cases, or continue to apply their own circuitous reasoning?

More importantly, is it ethical to argue only Federal Circuit precedent when it’s clear that the rest of the country decides the issue for your opponent?

The better answer might be is for the Federal Circuit to justify any departure from SCROTUS precedent with wise and well reasoned opinions that would make sense to, say, a wise latina. Free from all of that pesky patent gobbledygook.

Isn’t Grokster a case of the Supremes being persuaded to extend patent law concepts into a non-patent context? I would consider Grokster to be an expansion of mainstream law to accomodate FC jurisprudence. Grokster does not appear to push the FC in any particular direction.

Regarding the “almost exclusively cite to Federal Circuit patent cases” notion, I agree if you feel comfortable that such cases sufficiently support your argument. But if not, your next best option is other patent cases (pre-1982 appellate cases, district courts, CIT, Federal Claims, BPAI). And if that fails, sure, make analogies to other areas of law, IP if possible.

In the past, I have spoken with appellate attorneys who suggested that briefs to the Federal Circuit should almost exclusively cite to prior Federal Circuit patent cases.

I’m going to take a wild guess that these appellate attorneys were considering the issue in the context of cases whose holdings represented a perceived contraction in the rights of patent holders which, as we all know, is The Worst Thing Ever in the History of the World.

In the context of a case like SEB v. MW, which makes it easier to find inducement of patent infringement, why OF COURSE it’s proper to look elsewhere for guidance.

I think in the case of SEB what happened is that they relied on the patent law in the earlier cases to arrive at (or seemed to arrive at) a holding that provided (or more accurately, encouraged the use of) an obvious loophole.

They were forced to close the loophole up with what is basically an equitable analysis. There being no patent law to rely on, they went elsewhere where the identical question had been asked and answered.

In recent cases such as eBay, MedImmune, and Grokster, the Supreme Court pushed the Federal Circuit to consider non-patent jurisprudence when deciding patent cases.

As they should. When it comes to questions that are not patent-specific, such as “what is knowledge” and “what are the conditions for an injunction”, patent cases should be consistent with the vast body of non-patent caselaw that has refined the answers to these questions.

This could be the dawn of a whole new era for the Federal Circuit. Before we know it, they’ll be considering Supreme Court precedent.